The practice reforms introduced by the EU Trade Mark Amendment Regulation on 1st October 2017 broaden the scope of the rights that a trademark owner can claim and assert.

This refers to the implementation of the second round of reforms at the European Union Intellectual Property Office (EUIPO). It covers procedure and practice relating to the type of mark, examination, absolute and relative grounds objections, opposition and cancellation, and appeals. The new practice regime comes into force on the 1st October 2017.

The four key changes which we feel our clients need to know, are as follows:

The elimination of the graphical representation requirement.

The new multimedia trade mark.

The new Certification trade mark.

The new remedy offering an assignment of the right under challenge.

Eliminating the graphical representation requirement:

From the 1st October 2017, EUTMs will no longer be required to be capable of graphical of representation. Previously, all trademarks had to be capable of being represented in two dimensions, on paper. The reform means that signs may be represented in any appropriate form using generally available technology, providing these representations are clear, precise, self-contained and objective.

We have inserted below the EUIPO’s table addressing the new desired formats of certain popular Mark types:

Type of trade mark

Description required?

Format required

Word

No

N/A

Figurative

No

JPEG

Shape

No

JPEG OBJ STL X3D

Position

Optional (previously mandatory)

JPEG

Pattern

Optional

JPEG

Colour (single)

No

JPEG

Colour (combination)

Optional (previously mandatory)

JPEG

Sound

No

JPEG MP3 (max 2 Mb)

Motion

Optional (previously mandatory)

JPEG MP4 (max 20 Mb)

Multimedia

No

MP4 (max 20 Mb)

Hologram

No

JPEG MP4 (max 20 Mb)

Whilst it is hoped that this change will increase legal certainty, reduce the number of objections raised by the EUIPO, and create a more flexible route to registering a trademark. There will be challenges, not least, the adjustment that the EUIPO Examiners will have make.

We are also mindful that the new regime will still be problematic when it comes to unconventional trademarks such as ‘smell’, ‘taste’ and ‘colour’ Marks. Since, smell and taste (being olfactory senses), and colour are variable and subjective, depending on the sensory perception of the individual subjected to them.

The Multimedia Mark:

Perhaps the most exciting development is the new approach for dealing with the representation requirement for a trademark. This makes it possible to register a ‘multimedia’ trademark which could be composed of content from a variety of different forms such as; audio, animation, and video, which would have previously either been difficult to register or entirely excluded, given the former requirement for a trademark to be capable of graphical representation.

Multimedia trademarks afford the opportunity for our clients to explore future proofing their IP strategy, by making use of new marketing techniques, and ultimately facilitating a more immersive approach to branding.

There is the prospect that new multimedia trademarks may cause a conflict with existing copyright laws, such as conflicts arising from establishing the original author of individual components of the Mark. However, the multimedia trademark represents a huge opportunity for forward thinking businesses and individuals, who would like to exploit the opportunity of being first onto the market with an entirely novel trademark which reflects society’s current multimedia culture. Exactly, how much this development will broaden the scope of what can be registered as a trademark remains an open question, and watch this space.

The Certification Mark:

Another opportunity arising from the practice reform, is the introduction of the Certification Mark, which brings the EUIPO into line with the national laws of several European countries, including the United Kingdom, which already provide for registration of Certification Marks.

Certification Marks indicate that the goods and services bearing the Mark comply with a given standard set out in the regulations of use and controlled under the responsibility of the Certification Mark owner, irrespective of the identity of the producer or provider the goods and services at issue that actually uses the Certification Mark.

Certification Marks are subject to regulations of use. which must be filed within two months of the application and must contain:

the characteristics of the goods or services to be certified;

the conditions governing the use of the Certification Mark;

the testing and supervision measures to be applied by the Certification Mark owner.

Owing to the nature of a Certification Mark, it cannot be owned by a provider of the goods and services which the Mark certifies, and in addition geographical origin remains an exception which cannot be the subject of a Certification Mark.

New Assignment Remedy:

A significant new provision under the reform, is the introduction of a new remedy; the ability to call for an Assignment of a trademark, where this is being challenged for validity. For actions commencing on or after the 1st October 2017, where another party registers an EUTM without the proprietor’s authorisation, the proprietor is now entitled to demand the assignment of the EUTM. Previously, the only remedy for the proprietor at the EUIPO was to seek to invalidate the EUTM and have it struck off the register.

This represents a positive step for brand owners since this remedy will allow the legitimate proprietor to seek assignment of a Mark without having to make a backroom deal with the party who has wrongly applied for the Mark, or having to incur the cost of having the subsequently applying for a new EUTM, having already incurred the costs of seeking the invalidation of the offending parties Mark.

Conclusion:

The amendments discussed above, represent the more significant practice reforms being introduced by the EUIPO, but there are other procedural changes that the trademark team at Albright IP have swiftly assimilated into their practice, to best serve their clients.

With change comes opportunity. Albright IP has a team of committed and forward-thinking Trade Mark Attorneys, who are ready to help you make the most of these new opportunities, and to maximise the advantages they deliver.

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Julia House

Julia is a very experienced practitioner and a Trademark Partner. She is able to call upon a wealth of knowledge acquired in-house and in private practice; making her well-placed to provide informed, commercial advice in relation to the issues at hand. Julia qualified as a British and European Trademark Attorney in 1991.

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